How Long Does Patent and Trademark Prosecution Take? (2012 update)

The USPTO recently issued its Performance and Accountability Report for Fiscal Year 2012. This means that it’s time for IP Spotlight’s annual analysis of the question: “how long does it take to obtain a patent or trademark registration?”

To answer that question, here are a few highlights from the USPTO report:

Patents:The USPTO improved wait times in nearly all areas for patent applications in FY 2012. The average time between filing and first office action was 21.9 months this year, representing a 21% decrease as compared to FY 2011 data. However, a faster first action does not always mean a faster patent grant. The average total pendency was 32.4 months in 2012, representing a 3.9% decrease as compared to 2011 — still a significant improvement, but not the major change seen in first action timing.

The pendency rates vary depending on the technology covered by the patent application. For example:

applications relating to biotechnology and organic chemistry (USPTO Technology Center 1600) have an average wait time of 17.8 months to first action, and an average total pendency of 30 months;

applications relating to chemical and materials engineering (USPTO Technology Center 1700) have an average wait time of 21.2 months to first action, and an average total pendency of 32.8 months;

applications relating to computer architecture, software & information security (USPTO Technology Center 2100) generally wait 23.5 months to first action, and have an average total pendency of 37.5 months;

applications relating to communications technologies (USPTO Technology Center 2600) have an average wait time of 24.3 months to first action, and an average total pendency of 37.2 months; and

applications relating to mechanical engineering products (USPTO Technology Center 3700) have an average wait time of 24.6 months to first action, and an average total pendency of 35.7 months.

The total average pendency is highest for applications involving networks, multiplexing cable and security technologies (USPTO Technology Center 2400), where total pendency averages 41.1 months.

A small amount of the improvement — especially that involving first actions — may be attributed to new USPTO programs such as the First Action Interview program, the Patent Prosecution Highway, and the track one accelerated examination option. However, the USPTO received over 530,000 non-provisional patent applications in FY 2012, and less than 13,000 of the filings took advantage of those programs in 2012. A more likely cause of the improvement may be internal workflow improvements that were spearheaded by USPTO Director David Kappos, along with the fact that the USPTO increased its body of patent examiners by 17% in 2012, which provided more manpower to handle the workload.

In addition, as noted in previous years, the 32.4 month average total pendency statistic can be quite optimistic. This is because when an applicant files a Request for Continued Examination (RCE), the USPTO counts all actions after the RCE as an entirely new case rather than an extension of the existing case. The USPTO report states that of the patent applications examined in 2012, 29.4% required an RCE. Thus, nearly 30% of patent applicants should be prepared to experience a 32.4 month average pendency at least twice — once for the original filing, and a second time after the RCE. Also, as Patently-O recently observed, the USPTO’s RCE backlog has nearly doubled in the past two years, “increasing from under 50,000 in October 2011 to over 95,000 in September 2012, and pendency from RCE filing to the next Office Action going from an average of 2.7 months in October 2011 to 5.9 months in September 2012.”

The overall patent allowance rate was 53.2% in FY 2012– a slight increase from FY 2011’S 49.9%. As in previous years, applications that took advantage of First Action Interview, track one examination, or patent prosecution highway (PPH) programs often received allowance more quickly. About 29% of track one and First Action Interview filings received an allowance on first action, compared to an 11.5% rate in standard filings. PPH filings receive a 90% allowance rate, which is not surprising given that other patent offices have already found PPH cases to be allowable.

Trademarks: In FY 2012 the average time from filing to first Office Action in a trademark application was 3.2 months, and the average total pendency was 10.2 months. These numbers are similar to the 2011 statistics, and better than the USPTO’s goals of 3.5 months to first action and 12.0 months overall pendency.

About IP Spotlight

IP Spotlight provides news and practice tips relating to the legal and business aspects of intellectual property and other intangible assets. Topics include licensing, due diligence, acquisition, compliance and risk management associated with patents, trademarks, copyrights and trade secrets. IP Spotlight is published by Jim Singer of Fox Rothschild LLP.

About the Author

Jim Singer is a partner with the law firm of Fox Rothschild LLP, where he focuses on intellectual property acquisition, protection, enforcement and licensing. For more details and contact information, select the "About the Author" link below.

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